Federal Court Dismisses Trademark Suit After Applying Rogers Test in Haas Automation, Inc. v. Steiner

U.S. District Judge André Birotte Jr. issued the ruling in Haas Automation, Inc. v. Steiner. Plaintiff Haas Automation has appealed the dismissal.

Surviving to Drive was authored by international racing figure Guenther Steiner, former manager of the Haas Formula 1 racing team that made history in 2016 as the first American-led team to compete in Formula 1 in three decades. Steiner appeared on multiple seasons of the hit Netflix reality show Formula 1: Drive to Survive, quickly becoming a fan favorite for his plain-spoken personality and liberal use of profanity. His 2023 memoir Surviving to Drive tells the story of the team’s 2022 season and features a cover photograph of a team car bearing logos of the team’s sponsor, Haas Automation.

Months after the book hit the shelves, Steiner left Haas Formula 1 and sued the team for breach of contract. Haas Automation—owned by Gene Haas—then sued Steiner and publisher Ten Speed Press in the Central District of California, alleging that the book’s cover and inside photographs infringed on its trademarks. Steiner and Ten Speed Press moved to dismiss on the basis of Ninth Circuit cases adopting Rogers v. Grimaldi, which held the use of a trademark in the title of an expressive work is protected by the First Amendment if it is artistically relevant to the work and does not explicitly mislead consumers as to the work’s source or content.

The Ninth Circuit adopted the Rogers test more than 20 years ago and expanded it to include trademark uses within expressive works. It is a formidable obstacle, and relatively few plaintiffs can survive the application of the test.

The 2023 Jack Daniel’s decision, however, held that not all expressive works are eligible for Rogers. The defendant in that case made a chewy dog toy that looked like a bottle of Jack Daniel’s whiskey and sold it under the name “Bad Spaniels.” The defendant claimed trademark and trade dress rights in the toy.Jack Daniel’s sued for trademark infringement, and the lower courts held the lawsuit failed under Rogers because the toy was an expressive work. But the Supreme Court held the Rogers test was limited to claims involving “‘non-trademark uses,’” where “‘the defendant has used the mark’ at issue in a ‘non-source-identifying way.’” Because the defendant used Bad Spaniels as an identifier of the source for the toy (the Court again noted the defendant actually claimed trademark rights in Bad Spaniels), the case would have to be decided under the traditional likelihood-of-confusion factors. The court took no position on “whether Rogers has merit in other contexts[.]”

Lower courts in the wake of Jack Daniel’s have wrestled with whether the defendants’ uses of trademarks in artistic works are signifiers of source. The Supreme Court decision provided little guidance on what uses would remain candidates for the test, except to cite a handful of well-known decisions applying Rogers: Mattel, Inc. v. MCA Records, Inc. (toy company sued for trademark infringement over defendants’ pop song entitled Barbie Girl); University of Ala. Bd. of Trustees v. New Life Art, Inc. (university sued artist over paintings of Crimson Tide football scenes depicting trademarked uniforms); and Louis Vuitton Mallatier S.A. v. Warner Bros. Entertainment Inc. (fashion house sued makers of film The Hangover where character mispronounced name of Louis Vuitton luggage). Justice Elena Kagan, writing for the majority, stated that in each of these cases, the defendants used trademarks “not to designate a work’s source, but solely to perform some other expressive function.”

Shortly after Jack Daniel’s, the Ninth Circuit decided Punchbowl, Inc. v. Aj Press, LLC, holding that Rogers did not apply where an invitation service named Punchbowl brought an infringement suit against a political news website branded Punchbowl News. Similarly to the defendant in Jack Daniel’s, the news website claimed trademark rights in Punchbowl News, and the court found it was used as a signifier of source.

Although the defendant’s use was not subject to Rogers, the court nevertheless affirmed that Jack Daniel’s carved out a “narrow” exception to Rogers,and circuit precedent applying the test to non-source-signifying uses remains “intact and binding.”

District court decisions continuing to apply Rogers in granting motions to dismiss include Down to Earth Organics, LLC v. Efron (plaintiff podcaster and manufacturer’s trademarked phrase “Down to Earth” used in title of defendants’ documentary series on wellness and travel, Down to Earth with Zac Efron); Hara v. Netflix, Inc. (likeness of professional drag queen allegedly used in animated series Q-Force); and JTH Tax LLC v. AMC Networks Inc. (name and trade dress of tax preparation service allegedly infringed in TV series Better Call Saul).

Other courts weighing infringement claims against expressive works, in particular the titles of such works, have declined to apply Rogers: Davis v. Amazon.Com, Inc. (plaintiffs’ alleged trademark in book Gringo used as title of movie (“While a source-identifying film title may have an expressive aspect, it may no longer seek shelter under Rogers from the Lanham Act likelihood-of-confusion test following Jack Daniel’s.”)); Mar Vista Ent., LLC v. THQ Nordic AB (counterclaim plaintiff’s trademark for video game series Alone in the Dark used as movie title); Homevestors of Am., Inc. v. Warner Bros. Discovery, Inc. (real estate company’s trademark “The Ugliest House of the Year” similar to title of TV show Ugliest House in America (“While [Jack Daniel’s] recognized that titles of artistic works had an ‘expressive element’ . . . it did not . . . declare that such could never serve a source-identifying function.”)).

Similarly to the plaintiffs in these cases, Haas Automation claimed Jack Daniel’s foreclosed application of Rogers because the book used Haas’s marks as source signifiers. But the district court rejected this argument, finding the photos of cars and uniforms featuring logos are typical of sports biographies and “merely tell[] the consumer what the Book is about and who the author worked for[.]” The court pointed to University of Alabama and analogized to the recent decision in Down to Earth Organics. In that case, the court found the documentary series title Down to Earth with Zac Efron did not use the plaintiff’s trademark “Down to Earth”to signify source but “‘simply to identify the subject matter and tone of the Series,’” and thus was subject to Rogers.

Haas argued in its opposition brief that the district court must accept as true the complaint’s allegation that there was a source-identifying use, but the court noted it was not required to accept the truth of legal conclusions “‘couched as . . . factual allegation[s].’”

After concluding Rogers applied, the court ruled the photos with Haas logos were artistically relevant to the book as they “provide additional context about the 2022 season with the Haas F1 Team.” In addition, the use was not explicitly misleading because “there is no explicit indication, overt claim, or explicit misstatement that the ‘source of the work’ is Haas Automation.”

The court dismissed the Lanham Act claims without leave to amend and declined to exercise supplemental jurisdiction over the remaining count for unfair business practices.

The defendants were represented by Lynn Oberlander and Elizabeth Schilken of Ballard Spahr LLP. The plaintiff was represented by Marina Lang, Michael Harris, and Jonathan Pearce of SoCal IP Law Group LLP.